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How  To  Obtain 
A  Patent 


Modern  American  Law  Lecture 


Blackstone  Institute,  Chicago 


HOW  TO  OBTAIN  A  PATENT 


BY 

JAMES  L.   HOPKINS,  LL.B. 


One  of  a  Series  of  Lectures  Especially  Prepared  for  the 
Blackstone  Institute 


BLACKSTONE  INSTITUTE 
CHICAGO 

Copyright,   1916,    By   Blackstone   Institute 


T 


JAMES  L.  HOPKINS 


JAMES  LOVE  HOPKINS  - 

James  Love  Hopkins,  who  contributes  the  following 
lecture,  is  a  native  of  St.  Louis,  where  he  was  born  in 
1868.  After  graduating  from  the  public  High  School 
he  entered  Washington  University,  entering  the  Law 
School  of  that  institution  at  the  end  of  his  freshman 
year.  After  one  year  in  the  Law  School  he  was  admitted 
to  the  bar,  in  1889,  and  has  been  practicing  law  ever 
since.  After  six  years  of  practice  he  completed  the  law 
school  course,  taking  the  degree  of  LL.B.  in  1895. 

While  in  general  practice,  his  argument  on  an  insur- 
ance case  led  the  late  Lyne  Metcalfe,  editor  of  the  Central 
Law  Journal,  to  ask  him  to  write  an  article  on  insurable 
interest,  which  was  followed  by  other  contributions  to 
that  publication,  and  the  article  on  Disbarment  in  the 
Encyclopedia  of  Pleading  and  Practice.  In  this  pre- 
liminary law  writing  he  was  encouraged  and  advised  by 
the  late  Seymour  D.  Thompson,  editor  of  the  American 
Law  Review,  and  a  talented  and  scholarly  author  of 
many  legal  texts. 

His  first  book,  Hopkins  on  Unfair  Trade,  was  pub- 
lished in  1899,  its  second  edition  was  published  in  1905 
under  the  title  Hopkins  on  Trademarks,  and  the  third 
edition  is  now  in  press,  being  the  first  American  text  on 
the  subject  to  attain  a  third  edition.  His  two-volume 
work  on  Patents  was  recently  published  and  has  been 
accepted  as  a  standard  authority.  His  hand-book  on 
the  New  Equity  Rules,  dedicated  to  the  late  Mr.  Justice 
Lurton  of  the  United  States  Supreme  Court,  was  se- 
lected by  the  Department  of  Justice  for  the  use  of  the 
Federal  judges  and  district  attorneys  throughout  the 
United  States.  Hopkins'  Judicial  Code  has  also  gone 
into  extensive  use.  The  treatises  on  Banks  and  Trust 
Companies  and  Unfair  Competition  and  Good  Will,  in 
Modern  American  Law,  were  written  by  Mr.  Hopkins. 

Mr.  Hopkins  has  been  in  Federal  practice  exclusively 
since  1898,  and  has  never  held  public  office.  He  is  a 
member  of  the  Committee  on  Admission  to  the  Bar  of 
the  United  States  District  Court  at  St.  Louis. 

As  to  his  practice,  his  name  is  familiar  to  all  users  of 
the  Federal  Reporter.  He  has  appeared  as  special 
Patent  Counsel  for  the  City  of  St.  Louis  and  for  the  City 
and  County  of  San  Francisco. 


HOW  TO  OBTAIN  A  PATENT 

By 
JAMES  L.  HOPKINS,  LL.B. 

1.    PRELIMINARY  OBSERVATIONS. 

The  Patent  Office  of  the  United  States  has  what  is 
sometimes  loosely  called  a  "bar"  of  its  own.  But 
that  bar  is  made  up  of  men  of  varying  legal  attain- 
ments, ranging  from  leaders  of  the  real  patent  bar — 
lawyers  not  only  admitted  to  the  bar  but  qualified 
to  act  as  counsel  in  advisory  and  litigated  questions 
of  patent  law — down  to  mere  "solicitors"  of  patents, 
who  are,  in  many  cases,  utterly  ignorant  of  law.  This 
astonishing  condition  of  things  has  been  deplored  by 
the  bar  generally,  and  is  due  to  the  following  Patent 
Office  rule,  under  which  no  legal  education  is  a  pre- 
requisite to  admission  to  practice  in  that  department. 

"A  register  of  attorneys  will  be  kept  in  this  office, 
on  which  will  be  entered  the  names  of  all  persons 
entitled  to  represent  applicants  before  the  Patent 
Office  in  the  presentation  and  prosecution  of  appli- 
cations for  patent.  The  names  of  persons  in  the 
following  classes  will,  upon  their  written  request,  be 
entered  upon  this  register : 

(a)  Any  attorney  at  law  who  is  in  good  standing 
in  any  court  of  record  in  the  United  States  or  any  of 

5 


6  MODERN  AMERICAN  LAW  LECTURE 

the  States  or  Territories  thereof  and  shall  furnish  a 
certificate  of  the  clerk  of  such  United  States,  State, 
or  Territorial  court,  duly  authenticated  under  the 
seal  of  the  court,  that  he  is  an  attorney  in  good 
standing. 

(b)  Any  person  not  an  attorney  at  law  who  is  a 
citizen  or  resident  of  the  United  States  and  who 
shall  file  proof  to  the  satisfaction  of  the  Commis- 
sioner that  such  person  is  of  good  moral  character 
and  of  good  repute  and  possessed  of  the  necessary 
legal  and  technical  qualifications  to  enable  him  to 
render  applicants  for  patents  valuable  service  and  is 
otherwise  competent  to  advise  and  assist  them  in  the 
presentation  and  prosecution  of  their  applications 
before  the  Patent  Office." 

The  Patent  Office  is  a  part  of  the  Department  of 
the  Interior,  and  is  under  the  direction  of  the  Com- 
missioner of  Patents,  the  duties  of  whose  office  call 
for  legal  attainments  of  a  high  order.  The  present 
Commissioner,  Thomas  Ewing,  of  New  York,  and 
Ben  Butterworth,  among  his  predecessors,  are  strik- 
ing examples  of  the  combination  of  legal  education 
and  executive  ability  required  in  this  position. 

In  the  vast  range  of  scientific  work  which  is  pre- 
sented to  the  Patent  Office,  there  are  developed  many 
peculiar  specialties.  Certain  men  specialize  in  hy- 
draulics, others  in  electricity,  etc.,  just  as  do  the 
inventors  they  represent.  The  soliciting  of  a  patent 
must  be  grounded  upon  a  basic  knowledge  of  the  law 
of  contracts ;  for  a  patent  is  merely  a  contract  between 
the  inventor  and  the  public  as  parties ;  the  considera- 
tion of  the  grant  of  the  patent  is  the  disclosure,  in 


HOW  TO  OBTAIN  A  PATENT  7 

full  and  apt  terms,  of  a  new  and  useful  invention. 
If  the  disclosure  is  not  such  as  to  teach  the  public 
(those  skilled  in  the  art  to  which  the  invention  re- 
lates) how  to  practice  the  invention  after  the  monop- 
oly has  expired,  there  is  a  want  of  consideration; 
and  so,  if  the  thing  is  not  new,  there  is  no  considera- 
tion, if  it  is  not  useful  (within  the  meaning  of  the 
patent  statute)  there  is  no  consideration.  Again,  the 
thing  patented  may  be  new,  and  may  be  useful,  but 
if  its  production  did  not  embody  invention  there  is 
no  consideration  for  the  grant  of  the  patent  and  it 
will  be  held  void.  So  much  to  show  the  vital  neces- 
sity of  a  working  knowledge  of  the  law  of  contracts 
by  one  who  attempts  to  solicit  a  patent. 

Next  comes  the  patent  statute — that  is  to  say,  all 
of  the  enactments  of  Congress  concerning  the  issu- 
ance of  patents  which  are  now  in  force ;  and  this  is 
outlined  in  Judge  Holt's  monograph  on  Patents  in 
Modern  American  Law. 

Next  come  the  Rules  of  the  Patent  Office,  promul- 
gated by  the  Commissioner  under  the  express  statu- 
tory authorization  of  Congress ;  these  rules  have  the 
force  and  effect  of  statute  law,  in  so  far  as  they  are 
not  in  conflict  with  statutes  of  the  United  States. 

It  follows  from  what  has  been  said  that  no  inven- 
tion should  be  intrusted  to  a  patent  solicitor  who  is 
not  a  lawyer ;  the  inventors  who  have  done  otherwise 
have  suffered  enormous  losses.  Nor  does  it  follow 
that  the  ablest  patent  lawyers  can  always  obtain  valid 
patents.  The  law  of  patents  has  been  termed  "the 
metaphysics  of  the  law."  There  is  no  department 
of  the  law  more  difficult,  more  exacting,  or  in  which 


8  MODERN  AMERICAN  LAW  LECTURE 

costly  errors  are  more  apt  to  be  made,  even  by  the 
most  learned  and  painstaking  lawyers.  But  it  is  the 
duty  of  the  lawyer  in  general  practice  to  warn  his 
clients  interested  in  inventions  of  the  danger  of  in- 
trusting the  most  difficult  of  all  legal  writing  to  any 
but  skilled  legal  guides.  And  it  is  the  duty  of  the 
student  who  would  qualify  himself  to  practice  patent 
law  to  ground  himself  firmly  in  the  common  law  of 
contracts  before  attempting  to  study  the  statutes  and 
rules  with  which  he  is  to  be  concerned.  Once  armed 
with  knowledge  of  the  law  of  his  subject,  he  need 
have  no  fear  of  shortcoming  in  mechanics,  chemistry 
or  other  technical  knowledge.  That  is  supplied  by  the 
inventor,  and  by  mechanical  experts.  The  law  of 
patents  is  so  highly  developed,  so  intricate,  and  so 
unsettled  in  many  vital  particulars  that  the  patent 
lawyer  can  never  acquire  perfect  knowledge  of  the 
law.  The  best  patent  lawyers  approach  each  new 
case  with  an  open  mind  as  to  the  facts,  gather  the 
facts  from  those  skilled  in  the  subject  to  which  the 
invention  relates,  and  apply  the  law  to  those  facts. 
What  is  loosely  called  "scientific  reading"  has  its 
place  in  eqiiipping  the  patent  lawyer,  but  that  place 
is  always  secondary  to  mastery  of  the  patent  law. 

2.     THE  FIRST  CONSULTATION. 

The  inventor  brings  his  lawyer  a  model,  saying,  "I 
want  a  patent  on  this  shoe-last. "  Looking  at  the 
model,  it  appears  to  be  an  ordinary  wooden  last,  the 
heel  and  toe  sections  being  joined  by  a  curious  and 
ingenious  hinge.  So  the  lawyer  advises,  "What  you 
want  is  a  patent  for  this  hinge" — a  new  thought  to 


HOW  TO  OBTAIN  A  PATENT  9 

the  inventor,  who  afterwards  draws  royalty  for  the 
use  of  that  hinge  used  in  structures  other  than  shoe- 
lasts. 

This  typical  case  illustrates  the  importance  of  the 
lawyer  finding  out  what  the  invention  really  is.  Im- 
portant here  to  know  you  are  right  before  going 
ahead. 

3.    THE  PRELIMINARY  EXAMINATION. 

Frequently  a  search,  called  a  "pre-ex.,"  is  made 
to  ascertain  whether  the  thing  in  question  is  probably 
patentable.  Such  searches  can  only  be  conveniently 
made  in  the  reference  room  in  the  Patent  Office, 
where  copies  of  issued  patents  are  kept  in  an  at- 
tempted classification.  The  question  of  classification 
is  very  troublesome,  and  is  under  constant  considera- 
tion and  revision  by  the  Patent  Office. 

4.    THE  DRAWING. 

Deciding  that  the  client  has  a  patentable  invention, 
we  call  in  the  draftsman  to  illustrate  a  preferred 
embodiment  of  the  invention.  The  Patent  Office 
drawing  is  highly  technical,  and  quite  beyond  the  skill 
of  the  ordinary  mechanical  draftsman.  The  case 
must  be  fully — but  not  too  fully — illustrated.  The 
drawing  must  be  on  bristol  board  of  certain  quality 
and  size,  with  certain  marginal  lines  and  certain  sig- 
natures of  the  inventor  (may  be  by  attorney)  and 
witnesses.  Then,  too,  certain  symbols  indicate  by  a 
few  lines  complicated  electrical  structures,  while  cer- 
tain shadings  indicate  wood,  or  glass,  or  other  mate- 
rial. Much  depends  on  how  the  invention  is  pic- 


10  MODERN  AMERICAN  LAW  LECTURE 

tared,  and  a  good  drawing  is  a  good  foundation  for 
the  lawyer's  work. 

N 

5.  CONSTITUENT  PARTS  OP  THE  APPLICATION. 

Every  application  for  patent  comprises  a  petition, 
a  description,  one  or  more  claims,  and  the  oath. 
There  is  usually  a  drawing,  and  a  power  of  attorney, 
the  latter  being  embodied  in  the  same  instrument  with 
the  petition.  The  word  " specification"  usually  and 
in  a  technical  sense  embraces  the  drawing,  descrip- 
tion and  claims;  but  in  the  often-used  expression, 
"specification  and  claims,"  the  word  specification 
means  the  description  alone. 

6.    THE  PETITION. 

The  petition  will  be  best  understood  by  reading  the 
form  therefor  prescribed  by  the  Patent  Office. 

"To  the  Commissioner  of  Patents: 

Your  petitioner,  ,  a  citizen  of  the  United 

States  and  a  resident  of ,  in  the  county  of 

and  State  of  (or  subject,  etc),  whose  post-office 

address  is ,  prays  that  letters  patent  may  be  granted 

to  him  for  the  improvement  in  ,  set  forth  in  the 

annexed  specification. 

Signed  at  . , ,  in  the  county  of and  State 

of ,  this day  of ,  19 .. 


7.    THE  DESCRIPTION. 


The  descriptive  part  of  the  specification  is  of  vital 
importance.  It  begins  with  a  short  description,  then 
describes  briefly  the  various  figures  shown  in  the 
drawings,  then  proceeds  with  a  detailed  description, 


HOW  TO  OBTAIN  A  PATENT  11 

followed,  preferably,  by  a  distinct  and  separate  de- 
scription of  the  operation  of  the  machine,  in  a  ma- 
chine application.  The  best  way  to  study  style  and 
terminology  is  to  study  copies  of  well  solicited  pat- 
ents. Here  note  that,  if  the  same  invention  is  sub- 
mitted to  fifty  patent  lawyers,  it  is  quite  impossible 
that  any  two  of  them  would  use  identical  language  in 
describing  it;  clearness,  conciseness,  accuracy,  free- 
dom from  ambiguity,  are  to  be  found  in  the  really 
fine  work  done  in  Patent  Office  practice. 
The  rules  provide  (Rule  39), 

"The  following  order  of  arrangement  should  be  observed  in 
framing  the  specification: 

(1)  Preamble  stating  the  name  and  residence  of  the  ap- 

plicant and  the  title  of  the  invention. 

(2)  General  statement  of  the  object  and  nature  of  the 

invention. 

(3)  Brief  description  of  the  several  views  of  the  drawings 

(if  the  invention  admits  of  such  illustration). 

(4)  Detailed  description. 

(5)  Claim  or  claims. 

(6)  Signature  of  applicant." 

The  description  should  be  written  with  the  mind 
firmly  fixed  on  the  new  thing  the  inventor  has  pro- 
duced. The  prior  art — meaning  the  same  class  of  in- 
vention in  the  past — may  be  referred  to,  to  point  out 
what  new  result  the  inventor  has  accomplished,  or 
what  old  result  he  has  procured  in  a  new,  and  cheaper, 
or  quicker,  or  otherwise  better,  way. 

Finally,  it  is  an  excellent  plan  to  write  the  claims 
before  writing  the  description.  The  claim  defines 
what  the  inventor  has  patented  to  him,  and  its  terms 
of  art  must  be  based  on  corresponding  antecedent 


12  MODERN  AMERICAN  LAW  LECTURE 

language  in  the  description.  Therefore,  writing  the 
claims  first  establishes  the  verbiage  to  be  used  in  the 
description,  and,  better  still,  crystallizes  the  inven- 
tion in  the  scrivener's  mind  so  that  in  his  description 
he  writes  always  with  a  view  to  emphasizing  that 
which  is  new. 

8.    THE  CLAIMS. 

Judge  Holt,  in  Modern  American  Law,  has  de- 
fined the  claim,  and  pointed  out  its  essentials.  Re- 
peating what  has  been  said  above,  the  claim  should 
be  written  first.  It  should  be  confined  to  the  smallest 
number  of  elements  present  in  the  invention  which 
have  novelty  as  a  combination,  and  which  form,  as 
Judge  Holt  has  elucidated,  a  true  combination  as 
distinguished  from  an  aggregation.  There  is  no  dan- 
ger of  having  too  many  claims — as  many  as  you  have 
the  patience  to  write,  and  the  good  fortune  to  get 
allowed;  for  each  claim  is  a  patent  in  itself,  and 
either  claim  may  be  held  void  in  litigation  without 
in  anywise  affecting  the  validity  of  the  other. 

To  learn  how  to  write  claims,  study  the  claims  that 
have  been  through  the  fire  of  litigation.  Let  us  take 
as  an  example  this  claim:  "A  switch  pin  having 
a  resilient  tongue  pivoted  within  or  upon  its  tip,  as 
set  forth."  This  is  claim  1  of  U.  S.  Letters  Patent 
No.  223,969,  issued  January  27,  1880,  to  Watts,  for 
"An  electrical  switch  pin,"  and  the  claim  was  ad- 
judged valid  by  Judge  Morris,  77  Federal  Reporter, 
page  895.  What  a  thing  of  beauty  this  claim  is— 
not  a  superfluous  syllable,  no  shadow  of  ambiguity. 
Just  one  grave  defect — the  words  "as  set  forth" 


HOW  TO  OBTAIN  A  PATENT  13 

should  not  have  been  used.  They  add  nothing  to  the 
value  of  the  claim,  and,  like  "  substantially  as  de- 
scribed" are  not  only  surplusage,  but  may  be  held  to 
be  words  of  limitation. 

So  beginning  with  the  simplest  combination  in  the 
invention,  having  the  fewest  elements,  we  will  claim 
the  more  complex  combinations  until  we  have  the 
invention  guarded  against  what  the  infringer  of  the 
future  will  try  to  do  by  way  of  using  the  principle 
of  our  invention,  but  with  a  change  of  form,  or  varia- 
tion in  mode  of  operation,  which  will  give  the  defend- 
ant room  to  argue  non-infringement  when  brought 
to  book. 

Claims  for  a  machine  may  be  drawn  to  any  part  of 
the  machine,  or  to  the  machine  as  a  whole — though 
such  "omnibus"  claims  are  seldom  worth  the  paper 
they  are  written  on,  if  the  machine  is  at  all  compli- 
cated. Claims  for  an  article  of  manufacture  should 
cover  separately  and  severally  each  of  its  patentable 
features.  In  claims  for  compositions  of  matter  only 
the  indispensable  ingredients  should  be  included, 
with  their  proportions.  Processes  or  methods  con- 
sist of  two  or  more  stages  or  operations  usually 
called  steps,  and  the  claim  should  be  drawn  to  only  the 
indispensable  steps,  and  in  their  proper  order. 

In  design  patents  there  can  be  but  a  single  claim, 

and  that  is — "The  ornamental  design  for  a , 

substantially  as  shown." 

9.     THE  OATH. 

The  following  form  of  oath  is  prescribed  by  the 
Patent  Office: 


14  MODERN  AMERICAN  LAW  LECTURE 


ss. 


. . ,  the  above-named  petitioner,  being  sworn 

(or  affirmed),  depose,  and  say. .  that   citizen. .  of 

and  resident. .  of  ,  that  

verily  believe  . . ; to  be  the  original,  first,  and 

inventor. .    of  the  improvement  in    described  and 

claimed  in  the  annexed  specification ;  that do . .  not  know 

and  do. .   not  believe  that  the  same  was  ever  known  or  used 

before   invention  or  discovery  thereof,  or  patented  or 

described  in   any  printed  publication  in  any  country  before 

invention  or  discovery  thereof,  or  more  than  two  years 

prior  to  this  application,  or  in  public  use  or  on  sale  in  the 
United  States  for  more  than  two  years  prior  to  this  application ; 
that  said  invention  has  not  been  patented  in  any  country  foreign 

to  the  United  States  on  an  application  filed  by or 

legal  representatives  or  assigns  more  than  twelve  months  prior 
to  this  application;  and  that  no  application  for  patent  on  said 

improvement  has  been  filed  by or representatives 

or  assigns  in  any  country  foreign  to  the  United  States,  except 

as  follows : 

Inventor's  full  name :       

Sworn  to  and  subscribed  before  me  this    day   of 

,  19.. 

(Signature  of  justice  or  notary) 


(Seal)  

(Official  character)" 

Here  we  must  have  a  care  to  decide  whether  the 
invention  is  sole  or  joint.  If  a  joint  invention  there 
must  be  joint  applicants  and  a  joint  oath,  or  the  re- 
sulting patent  will  be  void.  Conversely,  if  a  sole  in- 
vention, a  joint  oath  will  vitiate  the  patent.  Practi- 
cally, where  a  group  of  men  work  on  the  development 
of  an  invention  there  is  nearly  always  difficulty  in 
determining  who  are  the  real  inventors,  or  whether 
it  is  a  sole  or  joint  invention.  This  is  a  constantly 


HOW  TO  OBTAIN  A  PATENT  15 

recurring  question  in  the  office  of  the  active  patent 
practitioner,  and  frequently  requires  great  care  in 
its  consideration. 

10.    THE  SEAL  OF  THE  NOTARY. 

The  Patent  Office  rule  requires — 

"When  the  oath  is  taken  before  an  officer  in  any  country  in- 
cluding the  United  States,  all  the  application  papers  must  be 
attached  together  and  a  ribbon  or  tape  passed  one  or  more  times 
through  all  the  sheets  of  the  application,  and  the  ends  of  said 
ribbon  or  tape  brought  together  under  the  seal  before  the  latter 
is  affixed  and  impressed,  or  each  sheet  must  be  impressed  with 
the  official  seal  of  the  officer  before  whom  the  oath  was  taken,  or, 
if  he  is  not  provided  with  a  seal,  then  each  sheet  must  be  initialed 
by  him." 

11.    THE  FILING. 

Now  having  our  application  written  and  signed 
and  sworn  to,  a  fee  of  $15.00  entitles  us  to  file  it,  and 
starts  the  examiner  on  a  task  that  is  often  worth  hun- 
dreds of  dollars  to  the  applicant,  in  bringing  the  rele- 
vant prior  art  to  light.  The  case  must  be  filed  within 
30  days  from  the  date  of  the  oath,  or  a  new  oath  will 
be  required.  A  filing  receipt  bearing  the  date  of  its 
issuance  and  the  serial  number  of  the  application  is 
furnished  by  the  Patent  Office.  The  application 
holds  that  serial  number  until  the  patent  is  printed 
for  issue,  when  it  is  given  a  new  and  final  patent 
number. 

12.    THE  FIRST  OFFICIAL  ACTION. 

The  application  having  been  received  by  the 
Patent  Office  and  the  filing  receipt  issued,  the  appli- 
cation is  assigned  to  its  proper  division  for  exami- 


16  MODERN  AMERICAN  LAW  LECTURE 

nation.  It  then  awaits  its  turn  for  examination. 
The  examiner,  upon  reaching  it,  examines  it — draw- 
ing, description  and  oath — for  informalities,  such  as 
defects  in  the  drawings,  want  of  signatures  of  wit- 
nesses, failure  of  the  notary  to  affix  his  seal,  and  the 
like.  Then  he  examines  the  description,  to  under- 
stand the  invention  and  see  that  it  is  sufficiently 
described.  Then  the  claims,  to  see  if  they  are  good  in 
form,  and  sustained  by  antecedent  description.  Then 
the  merits — and  here  begins  the  real  test  of  the  learn- 
ing and  skill  of  the  examiner.  He  may  cite  us  to 
encyclopedias,  scientific  texts,  patents  of  any  foreign 
country,  or  may  describe  old  and  unpatented  things 
within  his  own  knowledge  as  having  been  in  use. 
See  Drawbaugh  v.  Seymour,  77  Official  Gazette,  318. 
The  statute  reads : 

"§4893.  On  the  filing  of  any  such  application  and  the  pay- 
ment of  fees  required  by  law,  the  Commissioner  of  Patents  shall 
cause  an  examination  to  be  made  of  the  alleged  new  invention 
or  discovery;  and  if  on  such  examination  it  shall  appear  that 
the  claimant  is  justly  entitled  to  a  patent  under  the  law,  and 
that  the  same  is  sufficiently  useful  and  important,  the  Commis- 
sioner shall  issue  a  patent  therefor." 

Bo  if  our  application  is  in  proper  form,  and  we 
show  and  describe  a  new  and  useful  invention,  the 
application  is  allowed  at  this  stage.  But  usually  the 
first  action  is  a  rejection  of  all  or  a  part  of  the  claims, 
and  when  this  is  the  case  an  official  letter  gives  us 
the  grounds  of  rejection.  The  statute  reads : 

"§4903.  Whenever,  on  examination,  any  claim  for  a  patent 
is  rejected,  the  Commissioner  shall  notify  the  applicant  thereof, 
giving  him  briefly  the  reasons  for  such  rejection,  together  with 
such  information  and  references  as  may  be  useful  in  judging 


HOW  TO  OBTAIN  A  PATENT  17 

of  the  propriety  of  renewing  his  application  or  altering  his 
specification;  and  if,  after  receiving  such  notice,  the  applicant 
persists  in  his  claim  for  a  patent,  with  or  without  altering  his 
specifications,  the  Commissioner  shall  order  a  re-examination  of 
the  case." 

13.    DIVISION  OF  APPLICATIONS. 

While  no  U.  S.  Patent  has  ever  been  held  bad 
because  containing  more  than  one  invention,  and 
the  statute  is  silent  upon  the  subject,  it  is  obvious 
that  there  must  be  some  rule  as  to  this.  We  find  in 
the  Rules  the  following: 

"41.  Two  or  more  independent  inventions  can  not  be  claimed 
in  one  application ;  but  where  several  distinct  inventions  are  de- 
pendent upon  each  other  and  mutually  contribute  to  produce  a 
single  result  they  may  be  claimed  in  one  application. 

42.  If  several  inventions,  claimed  in  a  single  application,  be 
of  such  a  nature  that  a  single  patent  may  not  be  issued  to  cover 
them,  the  inventor  will  be  required  to  limit  the  description, 
drawing,  and  claim  of  the  pending  application  to  whichever 
invention  he  may  elect.  The  other  inventions  may  be  made  the 
subjects  of  separate  applications,  which  must  conform  to  the 
rules  applicable  to  original  applications.  If  the  independence  of 
the  inventions  be  clear,  such  limitation  will  be  made  before  any 
action  upon  the  merits;  otherwise  it  may  be  made  at  any  time 
before  final  action  thereon,  in  the  discretion  of  the  examiner. 

A  requirement  of  division  will  not  be  repeated  without  the 
written  approval  of  a  Law  Examiner.  After  a  final  require- 
ment of  division,  the  applicant  may  elect  to  prosecute  one  group 
of  claims,  retaining  the  remaining  claims  in  the  case  with  the 
privilege  of  appealing  from  the  requirement  of  division  after 
final  action  by  the  Examiner  on  the  group  of  claims  prosecuted. ' ' 

In  practice  the  application  of  these  rules  is  usually 
wholesome,  and  division  required  only  where  there 
are  clearly  present  more  than  one  invention.  But 
in  exceptional  cases  the  rule  is  administered  arbi- 


18  MODERN  AMERICAN  LAW  LECTURE 

trarily  arid  with  no  apparent  reason  save  to  make  two 
applications  grow  where  but  one  grew  before.  The 
subject  is  too  difficult  to  dwell  upon  here.  The 
opinion  of  Mr.  Justice  McKenna  in  the  United  States 
ex  rel.  Steinmetz  v.  Allen,  192  U.  S.  543,  48  L.  Ed. 
563,  may  be  read  for  fuller  treatment  of  this  topic. 

14.    AMENDMENT. 

The  right  to  amend  the  application  is  given  by 
statute.  The  Patent  Office  rule  is — 

"68.  The  applicant  has  a  right  to  amend  before  or  after  the 
first  rejection  of  action;  and  he  may  amend  as  often  as  the 
examiner  presents  new  references  or  reasons  for  rejection.  In 
so  amending,  the  applicant  must  clearly  point  out  all  the  patent- 
able  novelty  which  he  thinks  the  case  presents  in  view  of  the 
state  of  the  art  disclosed  by  the  references  cited  or  the  objec- 
tions made.  He  must  also  show  how  the  amendments  avoid  such 
references  or  objections. 

After  such  action  upon  an  application  as  will  entitle  the 
applicant  to  an  appeal  to  the  examiners-in-chief  (Rule  134),  or 
after  such  appeal  has  been  taken,  amendments  canceling  claims 
or  presenting  those  rejected  in  better  form  for  consideration  on 
appeal  may  be  admitted;  but  the  admission  of  such  an  amend- 
ment or  its  refusal,  and  any  proceedings  relative  thereto,  shall 
not  operate  to  relieve  the  application  from  its  condition  as 
subject  to  appeal,  or  to  save  it  from  abandonment  under  Rule 
171.  If  amendments  touching  the  merits  of  the  application  are 
presented  after  the  case  is  in  condition  for  appeal,  or  after 
appeal  has  been  taken,  they  may  be  admitted  upon  a  showing, 
duly  verified,  of  good  and  sufficient  reasons  why  they  were  not 
earlier  presented.  From  the  refusal  of  the  primary  examiner 
to  admit  an  amendment  a  petition  will  lie  to  the  Commissioner 
under  Rule  145.  No  amendment  can  be  made  in  appealed  cases 
between  the  filing  of  the  examiner's  statement  of  the  grounds 
of  his  decision  (Rule  135)  and  the  decision  of  the  appellate 
tribunal.  After  decision  on  appeal  amendments  can  only  be 
made  as  provided  in  Rule  142,  or  to  carry  into  effect  a  recom- 
mendation under  Rule  139.*' 


HOW  TO  OBTAIN  A  PATENT  19 

The  amendment  may  extend  to  both  drawing, 
description  and  claims.  The  amendment  frequently 
goes  to  the  length  of  cancelling  the  entire  description 
and  the  claims,  and  re-writing  the  whole.  Certain 
formalities  are  provided  for  by  rule. 

"73.  In  every  amendment  the  exact  word  or  words  to  be 
stricken  out  or  inserted  in  the  application  must  be  specified  and 
the  precise  point  indicated  where  the  erasure  or  insertion  is  to 
be  made.  All  such  amendments  must  be  on  sheets  of  paper 
separate  from  the  papers  previously  filed,  and  written  on  but 
one  side  of  the  paper.  Erasures,  additions,  insertions,  or  muti- 
lations of  the  papers  and  records  must  not  be  made  by  the 
applicant. ' ' 

"Amendments  and  papers  requiring  the  signature  of  the 
applicant  must  also,  in  case  of  assignment  of  an  undivided  part 
of  the  invention,  be  signed  by  the  assignee." 

"74.  When  an  amendatory  clause  is  amended,  it  must  be 
wholly  rewritten,  so  that  no  interlineation  or  erasure  shall 
appear  in  the  clause,  as  finally  amended,  when  the  application 
is  passed  to  issue.  If  the  number  or  nature  of  the  amendments 
shall  render  it  otherwise  difficult  to  consider  the  case,  or  to 
arrange  the  papers  for  printing  or  copying,  the  examiner  may 
require  the  entire  specification  to  be  rewritten. ' ' 

§4894,  R.  S.  U.  S.,  and  Rule  77,  both  fix  the  time 
limit  of  amendment  at  one  year  after  the  date  of  the 
last  official  notice  of  action  by  the  Patent  Office. 

The  difficulty  involved  in  amending  may  be  greatly 
lessened  by  a  personal  interview  with  the  examiner ; 
a  half  hour  in  consultation  will  often  save  months  of 
correspondence.  Such  interviews,  under  Rule  152, 
cannot  be  had  before  the  first  official  action  of  the 
application.  A  number  of  the  older  examiners  are 
veritable  walking  encyclopedias  of  technical  knowl- 
edge. The  more  able  the  examiner  the  more  certain 


20  MODERN  AMERICAN  LAW  LECTURE 

he  is  to  treat  the  applicant  and  his  attorney  with 
patience,  courtesy,  and  helpful  suggestions.  Many  a 
valuable  claim  is  suggested  by  the  examiner,  who  is 
almost  always  alert  in  understanding  and  appreciat- 
ing a  really  novel  and  valuable  invention.  It  is  no 
part  of  the  examiner's  duty  to  antagonize  the  appli- 
cant, and  in  practice  he  seldom  does.  It  is  clearly 
the  examiner's  duty  to  see  that  claims  are  properly 
limited  or  rejected;  first,  because  he  must  protect 
the  public  in  not  granting  a  monopoly  on  something 
the  public  already  has  the  right  to  use;  second, 
because  the  inventor  should  be  protected  against  waste 
of  time  and  money  on  a  thing  which  is  not  patent- 
able  ;  third,  to  protect  possible  investors  from  being 
deceived  into  making  idle  investments.  Many  of  the 
cleverest  swindlers  pose  as  inventors  or  promoters 
of  patent  property.  So  the  task  of  the  examiner  is 
one  involving  judicial  functions,  in  which  he  must 
not  be  swerved  from  the  right  course  by  indifference, 
sympathy,  favoritism  or  interest.  And  the  examin- 
ing corps  lives  up  to  this  high  standard  with  extra- 
ordinary fidelity. 

15.    APPEALS. 

Assuming  that  the  primary  examiner  has  twice 
rejected  our  application,  we  have  the  right  of  appeal 
to  the  Board  of  Examiners-in-Chief,  consisting  of 
three  members,  who  hold  their  hearings  in  the  Pat- 
ent Office,  where  we  may  be  heard  orally  if  we  indi- 
cate our  desire  at  the  time  of  filing  the  appeal.  (Rule 
137.)  The  appeal  fee  is  $10.00.  "The  appeal  must 
set  forth  in  writing  the  points  of  the  decision  upon 


•• 


HOW  TO  OBTAIN  A  PATENT  21 

which  it  is  taken,  and  must  be  signed  by  the  applicant 
or  his  duly  authorized  attorney  or  agent. "  (Rule 
133.)  The  primary  examiner  briefs  the  case  against 
us  in  the  form  of  an  " Examiner's  statement"  (Rule 
135). 

If  defeated  by  the  Board,  we  may  appeal  to  the 
Commissioner,  by  paying  $20.00  as  an  appeal  fee. 
The  Examiner's  statement  and  the  opinion  of  the 
Board  are  both  in  the  lists  against  us,  and  if  we  are 
again  beaten  we  go  to  the  Court  of  Appeals  of  the 
District  of  Columbia,  a  general  appellate  tribunal 
for  the  inferior  courts  of  Washington.  This  appeal 
must  be  taken  within  forty  days  from  the  date  of  the 
Commissioner's  decision,  by  filing  with  him  a  notice 
of  appeal  and  an  assignment  of  reasons  of  appeal. 
Then  we  file  a  certified  transcript  of  the  Patent 
Office  record  of  the  case  with  the  Clerk  of  the  Court 
of  Appeals,  and  there  file  a  petition  for  appeal 
addressed  to  that  court,  and  make  a  deposit  of  $15.00 
with  the  clerk.  The  clerk  then  estimates  the  cost  of 
printing  the  record,  which  of  course  depends  upon 
the  length  of  the  record.  We  then  pay  the  clerk  the 
amount  called  for  by  his  estimate,  he  has  the  record 
printed  and  the  cause  docketed.  The  Court  of  Ap- 
peals consists  of  the  Chief  Justice  and  two  Associate 
Justices,  and  serves  as  a  means  of  keeping  the  Patent 
Office  rules  and  practice  in  conformity  to  the  letter 
and  the  spirit  of  the  statutes.  The  court  seldom 
reverses  a  decision  in  which  all  of  the  tribunals  of 
the  Patent  Office  have  concurred.  On  such  appeals 
in  ex  parte  cases  the  Commissioner  is  represented 
by  counsel. 


22  MODERN  AMERICAN  LAW  LECTURE 

16.    ACTIONS  TO   COMPEL  THE   GRANT  OF  LETTERS 

PATENT. 

As  Judge  Holt  has  pointed  out  in  section  90  of  his 
monograph  on  Patents,  in  Modern  American  Law, 
this  is  a  statutory  action  seldom  resorted  to  in  ex 
parte  cases ;  nevertheless  we  will  give  it  passing  con- 
sideration, as  the  remedy  provided  for  ultimate 
review  of  the  refusal  of  an  application  for  patent. 
The  statutory  provision  reads: 

§4915.  "Whenever  a  patent  on  application  is  refused,  either 
by  the  Commissioner  of  Patents  or  by  the  Supreme  Court  (now 
the  Court  of  Appeals)  of  the  District  of  Columbia  upon  appeal 
from  the  Commissioner,  the  applicant  may  have  remedy  by  bill 
in  equity;  and  the  court  having  cognizance  thereof,  on  notice 
to  adverse  parties  and  other  due  proceedings  had,  may  adjudge 
that  such  applicant  is  entitled,  according  to  law,  to  receive  a 
patent  for  his  invention,  as  specified  in  his  claim,  or  for  any 
part  thereof,  as  the  facts  in  the  case  may  appear. ' ' 

The  statute  further  provides  that  all  the  expenses 
of  the  proceedings  shall,  if  there  is  no  party  depend- 
ent other  than  the  Commissioner,  be  paid  by  the 
applicant,  whether  the  final  decision  is  in  his  favor 
or  not. 

Such  cases  are  to  be  tried  on  all  competent  evi- 
dence adduced,  and  are  not  limited  to  the  record  that 
was  before  the  Patent  Office.  The  action  is  governed 
by  the  usual  rules  obtaining  and  in  force  in  the  Fed- 
eral courts  of  equity.  This  express  statutory  remedy 
has  been  held  to  exclude  the  resort  to  mandamus  as 
a  means  of  reviewing  the  Patent  Office  decision  in 
finally  refusing  a  patent;  but  mandamus  may  be 
employed  to  review  decisions  of  the  Patent  Office 
on  other  subjects,  such  as  its  power  to  pass  a  certain 


HOW  TO  OBTAIN  A  PATENT  23 

rule  of  procedure,  when  the  rule  is  alleged  to  contra- 
vene the  statute.  It  has  been  held  that  the  proceeding 
under  this  section  is  a  proper  means  of  compelling 
the  grant  of  a  reissue  application.  The  object  of  the 
enactment  was  to  preclude  the  finality  of  decisions 
refusing  a  patent,  just  as  the  courts  have  never 
treated  the  affirmative  action  of  the  Patent  Office  in 
granting  an  application,  or  deciding  an  interference, 
as  having  more  than  prima  facie  weight.  As  the  suc- 
cessful applicant  for  a  patent  must  have  his  day  in 
court,  and  an  adjudication  of  validity  before  his 
patent  is  regarded  as  anything  more  than  a  grant  of 
the  right  to  file  a  suit,  so  the  unsuccessful  applicant 
is  given  his  day  in  court  to  the  end  of  securing  a 
strictly  judicial  adjudication  upon  his  rights. 

17.    INTERFERENCES;  GENERAL  CONSIDERATION. 

Under  the  authority  of  §4904,  Revised  Statutes  of 
the  United  States,  the  Patent  Office  has  adopted  the 
following  rules  defining  interferences,  and  the  cases 
in  which  they  will  be  declared : 

"93.  An  interference  is  a  proceeding  instituted  for  the  pur- 
pose of  determining  the  question  of  priority  of  invention  between 
two  or  more  parties  claiming  substantially  the  same  patentable 
invention.  The  fact  that  one  of  the  parties  has  already  obtained 
&  patent  will  not  prevent  an  interference,  for,  although  the  Com- 
missioner has  no  power  to  cancel  a  patent,  he  may  grant  another 
patent  for  the  same  invention  to  a  person  who  proves  to  be  the 
prior  inventor. 

94.  Interferences  will  be  declared  between  applications  by 
different  parties  for  patent  or  for  reissue  when  such  applica- 
tions contain  claims  for  substantially  the  same  invention  which 
are  allowable  in  the  application  of  each  party,  and  interferences 
will  also  be  declared  between  applications  for  patent,  or  for 


24  MODERN  AMERICAN  LAW  LECTURE 

reissue,  and  unexpired  original  or  reissued  patents,  of  different 
parties,  when  such  applications  and  patents  contain  claims  for 
substantially  the  same  invention  which  are  allowable  in  all  of 
the  applications  involved :  Provided,  That  where  the  filing  date 
of  any  applicant  is  subsequent  to  the  filing  date  of  any  patentee, 
the  applicant  shall  file  an  affidavit  that  he  made  the  invention 
before  the  filing  date  of  the  patentee. 

Parties  owning  applications  or  patents  which  contain  con- 
flicting claims  will  be  required  before  an  interference  is  de- 
clared to  show  cause  why  these  claims  shall  not  be  eliminated 
from  all  but  one  of  the  applications  or  patents  of  common 
ownership." 

18.    THE  DECLARATION  OP  INTERFERENCE,  AND 
PRELIMINARY  STATEMENT. 

When  an  interference  is  found  to  exist,  it  is  the 
duty  of  the  primary  examiner  to  establish  the  issues 
of  the  interference,  that  is  to  say,  claims  identical  in 
terms,  and  which  can  be  read  upon  the  drawing  and 
description  of  each  of  the  parties.  There  is  no  limit 
to  the  number  of  parties,  three  or  more  applications 
being  frequently  involved  in  the  same  interference. 
These  interfering  claims  are  called  "counts"  in  inter- 
ference practice.  All  of  the  preliminaries  being 
arranged,  the  applications  are  forwarded  to  the  Ex- 
aminer of  Interferences,  who  sits  at  a  Court  of  First 
Instance  in  these  cases.  He  first  reviews  the  work 
of  the  Primary  Examiner,  to  see  whether  the  issues 
have  been  clearly  defined  and  whether  the  notices  of 
interference  are  clear  in  language  and  correct  in 
form ;  if  there  be  any  material  disagreement  between 
him  and  the  Primary  Examiner,  it  is  reviewed  by  the 
Commissioner  (Rules  98  and  99) .  The  Examiner  of 
Interferences  formally  declares  an  interference  by 
forwarding  notices  to  each  of  the  parties,  in  which 


HOW  TO  OBTAIN  A  PATENT  25 

are  fixed  the  dates  within  which  "  preliminary  state- 
ments" must  be  filed.  The  preliminary  statement 
must  conform  with  the  requirements  of  the  rules, 
which  are  as  follows: 

' '  110.  Each  party  to  the  interference  will  be  required  to  file 
a  concise  preliminary  statement,  under  oath,  on  or  before  a  date 
to  be  fixed  by  the  Office,  showing  the  following  facts: 

(1)  The  date  of  original  conception  of  the  invention  set 

forth  in  the  declaration  of  interference. 

(2)  The  date  upon  which  the  first  drawing  of  the  inven- 

tion and  the  date  upon  which  the  first  written  de- 
scription of  the  invention  was  made. 

(3)  The  date  upon  which  the  invention  was  first  disclosed 

to  others. 

(4)  The  date  of  the  reduction  to  practice  of  the  invention. 

(5)  A  statement  showing  the  extent  of  use  of  the  inven- 

tion. 

(6)  The  applicant  shall  state  the  date  and  number  of 

any  application  for  the  same  invention  filed  within 
twelve  months  before  the  filing  date  in  the  United 
States,  in  any  foreign  country  adhering  to  the 
International  Convention  for  the  Protection  of 
Industrial  Property  or  having  similar  treaty  rela- 
tions with  the  United  States. 

If  a  drawing  has  not  been  made,  or  if  a  written  description 
of  the  invention  has  not  been  made,  or  if  the  invention  has  not 
been  reduced  to  practice  or  disclosed  to  others  or  used  to  any 
extent,  the  statement  must  specifically  disclose  these  facts. 

When  the  invention,  was  made  abroad  the  statement  should 
set  forth : 

(1)  That  the  applicant  made  the  invention  set  forth  in 

the  declaration  of  interference. 

(2)  Whether  or  not  the  invention  was  ever  patented;  if 

so,  when  and  where,  giving  the  date  and  number  of 
each  patent,  the  date  of  publication,  and  the  date 
of  sealing  thereof. 

(3)  Whether  or  not  the  invention  was  ever  described  in 

a  printed  publication ;  if  so,  when  and  where,  giv- 
ing the  title,  place,  and  date  of  such  publication. 


26  MODERN  AMERICAN  LAW  LECTURE 

(4)  When  the  invention  was  introduced  into  this  coun- 
try, giving  the  circumstances  with  the  dates  con- 
nected therewith,  which  are  relied  upon  to  establish 
the  fact. 

The  preliminary  statements  should  be  carefully  prepared,  as 
the  parties  will  be  strictly  held  in  their  proofs  to  the  dates  set 
up  therein. 

If  a  party  prove  any  date  earlier  than  alleged  in  his  pre- 
liminary statement,  such  proof  will  be  held  to  establish  the  date 
alleged  and  none  other. 

The  statement  must  be  sealed  up  before  filing  (to  be  opened 
only  by  the  Examiner  of  Interferences;  see  Rule  111),  and  the 
name  of  the  party  filing  it,  the  title  of  the  case,  and  the  subject 
of  the  invention  indicated  on  the  envelope.  The  envelope  should 
contain  nothing  but  this  statement. 

111.  The  preliminary  statements  shall  not  be  opened  to  the 
inspection  of  the  opposing  parties  until  each  one  shall  have  been 
filed,  or  the  time  for  such  filing,  with  any  extension  thereof, 
shall  have  expired,  and  not  then  unless  they  have  been  examined 
by  the  proper  officer  and  found  to  be  satisfactory. 

Any  party  in  default  in  filing  his  preliminary  statement  shall 
not  have  access  to  the  preliminary  statement  or  statements  of 
his  opponent  or  opponents  until  he  has  either  filed  his  state- 
ment or  waived  his  right  thereto,  and  agreed  to  stand  upon  his 
record  date. 

A  party  who  alleges  no  date  in  his  preliminary  statement 
earlier  than  the  filing  of  the  application  or  applications  of  the 
other  party  or  parties  shall  not  have  access  to  the  preliminary 
statement  of  said  party  or  parties. 

112.  If,  on  examination,  a  statement  is  found  to  be  defective 
in  any  particular,  the  party  shall  be  notified  of  the  defect  and 
wherein  it  consists,  and  a  time  assigned  within  which  he  must 
cure  the  same  by  an  amended  statement ;  but  in  no  case  will  the 
original  or  amended  statement  be  returned  to  the  party  after  it 
has  been  filed.     Unopened  statements  will  be  removed  from 
interference  files  and  preserved  by  the  office,  and  in  no  case  will 
such  statements  be  open  to  the  inspection  of  the  opposing  party 
without  authority  from  the  Commissioner.     If  a  party  shall 
refuse  to  file  an  amended  statement  he  may  be  restricted  to  his 
record  date  in  the  further  proceedings  in  the  interference. 


HOW  TO  OBTAIN  A  PATENT  27 

113.  In  case  of  material  error  arising  through  inadvertence 
or  mistake,  the  statement  may  be  corrected  on  motion  (see  Rule 
153),  upon  a  satisfactory  showing  that  the  correction  is  essential 
to  the  ends  of  justice.    The  motion  to  correct  the  statement  must 
be  made,  if  possible,  before  the  taking  of  any  testimony,  and  as 
soon  as  practicable  after  the  discovery  of  the  error. 

114.  If  the  junior  party  to  an  interference,  or  if  any  party 
thereto  other  than  the  senior  party,  fails  to  file  a  statement,  or 
if  his  statement  fails  to  overcome  the  prima  facie  case  made  by 
the  respective  dates  of  application,  such  party  will  be  notified 
by  the  examiner  of  interferences  that  judgment  upon  the  record 
will  be  rendered  against  him  at  the  expiration  of  thirty  days, 
unless  cause  is  shown  why  such  action  should  not  be  taken. 
"Within  'this  period  any  of  the  motions  permitted  by  the  rules 
may  be  brought.    Motions  brought  after  judgment  on  the  record 
has  been  rendered  will  not  be  entertained  unless  sufficient  rea- 
sons appear  for  the  delay. 

115.  If  a  party  to  an  interference  fail  to  file  a  statement, 
testimony  will  not  be  received  subsequently  from  him  to  prove 
that  he  made  the  invention  at  a  date  prior  to  his  application. 

116.  The  parties  to  an  interference  will  be  presumed  to  have 
made  the  invention  in  the  chronological  order  in  which  they 
filed  their  completed  applications  for  patents  clearly  disclosing 
the  invention ;  and  the  burden  of  proof  will  rest  upon  the  party 
who  shall  seek  to  establish  a  different  state  of  facts. 

117.  The  preliminary  statement  can  in  no  case  be  used  as 
evidence  in  behalf  of  the  party  making  it. ' ' 

There  are  many  preliminary  motions  which  may 
be  made  in  interference  cases.  One  usually  employed 
is  the  motion  to  dissolve  the  interference  upon  the 
ground  that  there  has  been  informality  in  creating 
the  interference,  or  that  a  claim  is  not  patentable  to 
one  of  the  parties,  or  that  one  of  the  parties  has  no 
right  to  make  the  claim  in  interference,  or  that  counts 
of  the  issue  have  different  meaning  in  the  different 
cases  or  applications  involved  in  the  interference. 
Motions  of  this  kind  are  accompanied  by  a  motion  to 


28 

transmit  to  the  Law  Examiner,  and  if  the  motion  to 
transmit  is  granted,  the  Law  Examiner  passes  upon 
the  motion  or  motions  to  dissolve. 

19.     TESTIMONY  IN  INTERFERENCE  CASES. 

Interference  cases  involve  the  question  of  priority 
alone;  although  there  are  many  cases  in  which  the 
issue  is  said  to  be  one  of  originality  rather  than  one 
of  priority,  meaning  that  one  of  the  parties  claims 
that  another  party  was  not  an  independent  inventor, 
or  an  inventor  at  all,  of  the  subject  matter,  but  merely 
stole  the  invention  from  his  opponent.  The  Patent 
Office  rules  154,  158,  both  inclusive,  provide  for  the 
manner  of  taking  testimony,  service  of  notices,  form 
of  certificate  of  the  officer  by  whom  the  depositions 
are  taken,  and  these  rules  must  be  strictly  adhered 
to  because  of  the  provision  of  Rule  159  that  "  evi- 
dence touching  the  matter  at  issue  will  not  be  con- 
sidered on  the  hearing  which  shall  not  have  been 
taken  and  filed  in  compliance  with  these  rules."  As 
the  rules  are  extremely  arbitrary,  they  must  be 
closely  studied  and  followed  in  every  particular. 
It  may  be  well  to  observe  that  documentary  evidence 
should  always  be  used,  where  it  exists,  in  preference 
to  unsupported  oral  testimony. 

The  taking  of  testimony  by  the  several  parties 
reverses  the  order  in  which  their  applications  were 
filed,  the  burden  of  proof  resting  upon  the  one  having 
the  most  recent  filing  date. 

The  testimony  being  taken  and  printed,  the  case 
is  briefed  and  argued  before  the  Examiner  of  Inter- 
ferences, whose  judgment  is  in  the  form  of  an  award 


HOW  TO  OBTAIN  A  PATENT  29 

of  priority  to  one  of  the  parties,  or  as  to  different 
parties  in  relation  to  the  several  counts  in  interfer- 
ence. Unless  his  decision  is  appealed  from,  Letters 
Patent  will  issue  to  the  successful  party  or  parties. 

20.    APPEALS  IN  INTERFERENCE  CASES. 

The  defeated  party  in  an  interference  has  the 
right  to  an  appeal,  the  series  of  appeals  being  from 
the  Examiner  of  Interferences  to  the  Board  of 
Examiners-in-Chief,  from  the  Board  of  the  Com- 
missioner, and  from  the  Commissioner  to  the  Court 
of  Appeals  of  the  District  of  Columbia.  If  the 
three  tribunals  of  the  Patent  Office  concur  in  their 
decisions,  the  result  is  seldom  reversed  by  the  Court 
of  Appeals.  The  decision  of  the  Court  of  Appeals, 
in  turn,  may  be  reviewed  under  §4915,  Revised  Stat- 
utes of  the  United  States,  quoted  above.  The  num- 
ber of  appeals  possible,  and  the  expensive  method 
of  taking  testimony  have  made  interference  pro- 
cedure a  subject  of  much  adverse  criticism.  There 
have  been  attempts  to  eliminate  the  appeal  to  the 
Board  of  Examiners-in-Chief,  and  other  attempts 
to  provide  for  a  single  hearing  in  the  Patent  Office, 
from  the  result  of  which  an  appeal  would  lie  to  the 
Court  of  Appeals.  But  these  attempts  have  been 
unavailing  thus  far. 


30 


MODERN  AMERICAN  LAW  LECTURE 


FORMS  OF  PATENT  APPLICATIONS. 

Application  for  Patent  on  a  Machine.    The  Form  Provided  by 
the  Patent  Office. 

THESIZE  OF  THE  SHEET  MUST  BE  EXACTLY 
10  *  15  INCHES.   SEE  RULE  E 


THI55PACC  MUST  BE  EIGHT  INCHES 


HOW  TO  OBTAIN  A  PATENT  31 


To  all  whom  it  may  concern: 

Be  it  known  that  I, ,  a  citizen  of  the  United 

States,  residing  at ,  in  the  county  of and  State 

of (or  subject,  etc.),  have  invented  a  new  and  useful 

meat-chopping  machine,  of  which  the  following  is  a  specification : 

My  invention  relates  to  improvements  in  meat-chopping  ma- 
chines in  which  vertically  reciprocating  knives  operate  in  con- 
junction with  a  rotating  chopping  block;  and  the  objects  of  my 
improvement  are,  first,  to  provide  a  continuously  lubricated 
bearing  for  the  block ;  second,  to  afford  facilities  for  the  proper 
adjustment  of  the  knives  independently  of  each  other  in  respect 
to  the  face  of  the  block ;  and,  third,  to  reduce  the  friction  of  the 
reciprocating  rod  which  carries  the  knives. 

I  attain  these  objects  by  the  mechanism  illustrated  in  the 
accompanying  drawing,  in  which — 

Figure  1  is  a  vertical  section  of  the  entire  machine ;  Fig.  2,  a 
top  view  of  the  machine  as  it  appears  after  the  removal  of  the 
chopping  block  and  knives ;  Fig.  3,  a  vertical  section  of  a  part  of 
the  machine  on  the  line  1  2,  Fig.  2 ;  and  Fig.  4,  a  detailed  view  in 
perspective  of  the  reciprocating  crosshead  and  its  knives. 

Similar  letters  refer  to  similar  parts  throughout  the  several 
views. 

The  table  or  plate  A,  its  legs  or  standards  B  B,  and  the  hanger 
a,  secured  to  the  underside  of  the  table,  constitute  the  framework 
of  the  machine.  In  the  hanger  a  turns  the  shaft  D,  carrying  a 
fly-wheel  E,  to  the  hub  of  which  is  attached  a  crank  o,  and  a 
crank-pin  p,  connected  by  a  link  b,  to  a  pin  passing  through  a 
crosshead  G,  and  to  the  latter  is  secured  a  rod  H,  having  at  its 
upper  end  a  crosshead  I,  carrying  the  adjustable  chopping  knives 
d  d,  referred  to  hereinafter. 

The  crosshead  G,  reciprocated  by  the  shaft  D,  is  provided  with 
anti-friction  rollers  e  e,  adapted  to  guides  /  /,  secured  to  the 
underside  of  the  table  A,  so  that  the  reciprocation  of  this  cross- 
head  may  be  accompanied  with  as  little  friction  as  possible. 

To  the  underside  of  a  wooden  chopping  block  J  is  secured  an 
annular  rib  k,  adapted  to  and  bearing  in  an  annular  groove  i  in 
the  table  A.  (See  Figs.  1  and  2.)  This  annular  groove  or  chan- 
nel is  not  of  the  same  depth  throughout,  but  communicates  at  one 
or  more  points  (two  in  the  present  instance)  with  pockets  or 
receptacles  j  j  wider  than  the  groove  and  containing  supplies  of 
oil,  in  contact  with  which  the  rib  h  rotates,  so  that  the  continuous 
lubrication  of  the  groove  and  rib  is  assured.  The  rod  H  passes 
through  and  is  guided  by  a  central  stand  K,  secured  to  the  table 
A,  and  projecting  through  a  central  opening  in  the  chopping 
block  without  being  in  contact  therewith,  the  upper  portion  of 
the  said  stand  being  contained  within  a  cover  k,  which  is  secured 


32  MODERN  AMERICAN  LAW  LECTURE 

to  the  block,  and  which  prevents  particles  of  meat  from  escaping 
through  the  central  opening  of  the  same. 

The  cross-head  I,  previously  referred  to,  and  shown  in  per- 
spective in  Fig.  4,  is  vertically  adjustable  on  the  rod  H,  and  can 
be  retained  after  adjustment  by  a  set-screw  x,  the  upper  end  of 
the  rod  being  threaded  for  the  reception  of  nuts,  which  resist  the 
shocks  imparted  to  the  cross-head  when  the  knives  are  brought 
into  violent  contact  with  the  meat  or  the  chopping-block. 

The  knives  d  d  are  adjustable  independently  of  each  other  and 
of  the  said  cross-head,  so  that  the  coincidence  of  the  cutting-edge 
of  each  knife  with  the  face  of  the  chopping-block  may  always  be 
assured. 

I  prefer  to  carry  out  this  feature  of  my  invention  in  the  man- 
ner shown  in  Fig.  4,  where  it  will  be  seen  that  two  screw-rods 
m  m  rise  vertically  from  the  back  of  each  knife  and  pass  through 
lugs  n  n  on  the  cross-head,  each  rod  being  furnished  with  two 
nuts,  one  above  and  the  other  below  the  lug  through  which  it 
passes.  The  most  accurate  adjustment  of  the  knives  can  be 
effected  by  the  manipulation  of  these  nuts. 

A  circular  casing  p  is  secured  to  the  chopping-block,  so  as  to 
form  on  the  same  a  trough  P  for  keeping  the  meat  within  proper 
bounds;  and  on  the  edge  of  the  annular  rib  h,  secured  to  the 
bottom  of  the  block,  are  teeth  r,  for  receiving  those  of  a  pinion  q, 
which  may  be  driven  by  the  shaft  D  through  the  medium  of  any 
suitable  system  of  gearing,  that  shown  in  the  drawing  forming  no 
part  of  my  present  invention. 

This  shaft  D  may  be  driven  by  a  belt  passing  round  the  pulleys 
s,  or  it  may  be  driven  by  hand  from  a  shaft  "W,  furnished  at  one 
end  with  a  handle  t,  and  at  the  other  with  a  cog-wheel  R,  gearing 
into  a  pinion  on  the  said  shaft  D. 

A  platform  T  may  be  hinged,  as  at  w,  to  one  edge  of  the  table 
A,  to  support  a  vessel  in  which  the  chopped  meat  can  be  depos- 
ited. The  means  by  which  it  may  be  supported  are  shown  in  full 
lines,  and  the  most  convenient  method  of  disposing  of  it  when 
not  in  use  is  shown  in  dotted  lines,  in  Fig.  1. 

I  am  aware  that  prior  to  my  invention  meat-chopping  machines 
have  been  made  with  vertically-reciprocating  knives  operating  in 
conjunction  with  rotating  chopping-blocks.  I  therefore  do  not 
claim  such  a  combination  broadly ;  but 

I  claim : 

1.  The  combination,  in  a  meat-chopping  machine,  of  a  rotary 
chopping-block  having  an  annular  rib,  with  a  table  having  an 
annular  recess  and  a  pocket  communicating  with  the  said  recess, 
all  substantially  set  forth. 

2.  In  a  meat-chopping  machine,  the  combination  of  a  rotary 
chopping-block  with  a  reciprocating  cross-head  carrying  knives, 
each  of  which  is  vertically  adjustable  on  the  said  cross-head  inde- 
pendently of  the  other,  substantially  as  described. 


HOW  TO  OBTAIN  A  PATENT  33 

3.  The  knife  d,  having  two  screw-rods,  m  m,  attached  to  its 
back,  substantially  as  shown,  for  the  purpose  specified. 

4.  The  combination,  in  a  meat-chopping  machine,  of  the  recip- 
rocating rod,  carrying  the  knives,  the  cross-head  secured  to  the 
said  rod,  and  having  anti-friction  rollers,  with  guides,  adapted  to 
the  said  rollers,  all  substantially  as  set  forth. 


Witnesses : 


Application  for  Product  and  Process;  as  Embodied    in    the 

Letters  Patent. 

UNITED  STATES  PATENT  OFFICE 

ARCHIBALD  S.  B.  LITTLE,  OF  NASHVILLE,  TENNESSEE.     PAINT 
COMPOSITION  AND    PROCESS   OF   MAKING   SAME. 

1,072,476.     Specification  of  Letters  Patent.     Patented  Sept.  9,  1913.     No 
Drawing.    Application  filed  October  16,  1912.    Serial  No.  726,051. 

To  all  whom  it  may  concern: 

Be  it  known  that  I,  ARCHIBALD  S.  B.  LITTLE,  a  subject  of 
the  King  of  Great  Britain,  residing  at  Nashville,  in  the  county 
of  Davidson  and  State  of  Tennessee,  have  invented  a  new  and 
useful  Paint  Composition  and  Process  of  Making  the  Same,  of 
which  the  following  is  a  specification. 

The  paint  forming  the  subject-matter  of  the  present  inven- 
tion has  special  application  in  connection  with  the  shell  of 
gas-holders  or  gasometers.  This  shell  dips  as  is  well  known 
into  a  body  of  water  more  or  less  saturated  with  light  oils 
such  as  hydrocarbon  oils,  benzol,  and  the  like  deposited  thereon 
by  condensation  from  the  carbureted  water-gas. 

The  object  of  my  invention  is  to  produce  a  paint  which 
when  spread  over  the  surface  of  the  gasometer  shell,  will  resist 
the  action  of  these  oils,  the  coat  of  paint  being  thus  left 
unimpaired  and  protecting  the  metal  of  which  the  shell  is 
constructed. 

The  process  or  method  of  compounding  the  ingredients  of 
the  paint  may  be  described  as  follows : — To  prepare  the  vehi- 
cle of  my  compound  I  dissolve  for  example  fifty  (50)  pounds 
of  rosin  in  its  own  weight  of  petroleum  spirit  such  as  gasolene, 
benzin  (or  equivalent  hydrocarbon).  I  then  heat  50  pounds 
of  linseed  oil  (raw  or  boiled)  with  five  (5)  pounds  of  red 
lead  and  five  (5)  pounds  of  litharge  to  a  consistence  such  as 
to  solidify  on  cooling.  This  mixture  (of  linseed  oil,  red  lead, 
and  litharge)  while  hot  is  dissolved  in  fifty  (50)  pounds  of 
turpentine.  This  solution  is  then  mixed  with  the  solution  of 


34  MODERN  AMERICAN  LAW  LECTURE 

rosin  in  the  petroleum  spirit  referred  to  and  serves  as  the 
vehicle.  To  make  a  durahle  paint,  a  proper  proportion  (to 
suit  the  painter)  of  Venetian  red  (red  oxid,  or  equivalent 
mineral  or  carbon  pigments  or  any  combination  of  the  same) 
is  added ;  and  if  it  be  desired  that  the  paint  shall  dry  quickly 
it  may  be  thinned  with  gasolene,  and  just  before  applying, 
adding  a  little  red  lead  thinned  down  with  sufficient  boiled 
linseed  oil  to  cause  the  mixture  to  pass  through  a  120  mesh 
sieve  before  running  it  into  the  bulk,  stirring  the  latter  during 
the  admixture.  To  the  mass  (with  or  without  the  final  admix- 
ture of  strained  red  lead  aforesaid)  is  added  about  four  (4) 
per  cent,  by  weight  of  zinc  chromate,  when  the  compound  is 
ready  for  use. 

If  the  ingredients  are  mixed  in  smaller  quantities,  the  same 
relative  proportions  by  weight  as  outlined  above  should  be 
adhered  to,  the  specific  weights  given  serving  merely  as  an 
example.  To  maintain  the  proper  relative  proportions,  and 
at  the  same  time  vary  the  weights  of  the  ingredients,  would 
obviously  fall  within  the  purview  of  the  practical  painter. 

Having  described  my  invention,  what  I  claim  is : — 

1.  In  the  manufacture  of  paint,  the  process  of  dissolving  a 
quantity  of  resin  in  a  hydrocarbon  then  heating  a  quantity  of 
linseed  oil  mixed  with  red  lead  and  litharge  to  a  consistence 
such  that  the  mass  solidifies  on  cooling,  dissolving  said  mass 
while  hot  in  a  suitable  quantity  of  turpentine,  and  adding  the 
solution  to  the  original  solution  of  resin  and  hydrocarbon. 

2.  In  the  manufacture  of  paint,  the  process  of  dissolving  a 
suitable  quantity  of  rosin  in  its  own  weight  of  petroleum 
spirit,  heating  a  mixture  of  linseed  oil  with  a  quantity  of  red 
lead  and  litharge  to  a  point  where  the  mass  solidifies  on  cool- 
ing, dissolving  said  mass  while  hot  in  turpentine,  and  adding 
the  solution  to  the  original  solution  of  rosin  and  petroleum 
spirit. 

3.  In  the  manufacture  of  paint,  the  process  of  dissolving 
fifty  pounds  of  rosin  in  its  own  weight  of  benzin,  heating  fifty 
pounds  of  linseed  oil  with  five  pounds  of  red  lead  and  five 
pounds  of  litharge  to  a  point  where  the  mass  solidifies  on  cool- 
ing, dissolving  said  mass  while  hot  in  fifty  pounds  of  turpen- 
tine, and  adding  thereto  the  original  solution  of  rosin   in 
benzin. 

4.  In  a  paint  composition  the  combination  of  a  vehicle  com- 
posed of  a  solution  of  fifty  pounds  of  rosin  in  fifty  pounds  of 
benzin,  mixed  with  a  solution  of  fifty  pounds  of  linseed  oil 
solidified  with  five  pounds  of  red  lead  and  five  pounds  of 
litharge,   in   fifty  pounds  of  turpentine,   a   pigment  mixed 
therewith,  and  a  metallic  chromate  forming  about  four  per 
cent,  of  the  entire  mixture. 

5.  In  a  paint  composition  the  combination  of  a  vehicle  com- 


HOW  TO  OBTAIN  A  PATENT  35 

posed  of  a  solution  of  fifty  pounds  of  rosin  in  fifty  pounds  of 
benzin,  mixed  with  a  solution  of  fifty  pounds  of  linseed  oil 
solidified  with  five  pounds  of  red  lead  and  five  pounds  of 
litharge,  in  fifty  pounds  of  turpentine,  an  insoluble  pigment 
mixed  therewith,  and  four  per  cent,  by  weight  of  the  entire 
mass,  of  zinc  chromate. 

6.  In  a  paint  composition  the  combination  of  a  vehicle  com- 
posed of  a  solution  of  fifty  pounds  of  rosin  in  fifty  pounds  of 
benzin,  mixed  with  a  solution  of  fifty  pounds  of  linseed  oil 
solidified  with  five  pounds  of  red  lead  and  five  pounds  of 
litharge,  in  fifty  pounds  of  turpentine,    a   mineral   pigment 
mixed  therewith,  a  gasolene  thinner,  and  four  per  cent,  by 
weight  of  the  entire  mass,  of  zinc  chromate. 

7.  In  a  paint  composition  the  combination  of  a  vehicle  com- 
posed of  a  solution  of  fifty  pounds  of  rosin  in  fifty  pounds  of 
benzin,  mixed  with  a  solution  of  fifty  pounds  of  linseed  oil 
solidified  with  five  pounds  of  red  lead  and  five  pounds  of 
litharge,  in  fifty  pounds  of  turpentine,  a  mineral  pigment 
mixed  therewith,  a  gasolene  thinner,  red  lead  thinned  with 
boiled  linseed  oil  to  cause  the  mixture  to  pass  through  a  120 
mesh  sieve,  and  substantially  four  per  cent,  of  zinc  chromate. 

In  testimony  whereof  I  affix  my  signature,  in  presence  of 
two  witnesses. 

ARCHIBALD  S.  B.  LITTLE. 
Witnesses : 

GILBERT  LITTLE, 
NATALIE  L.  GABRIEL. 


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